Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International...

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Role of IP in Benefiting Role of IP in Benefiting from University-Industry from University-Industry Partnerships: Incubators Partnerships: Incubators and IP: and IP: International Perspective International Perspective Istanbul, Turkey, January 10 and 11, Istanbul, Turkey, January 10 and 11, 2005 2005 Guriqbal Singh Jaiya Guriqbal Singh Jaiya Director, SMEs Division Director, SMEs Division World Intellectual Property World Intellectual Property Organization Organization

Transcript of Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International...

Page 1: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Role of IP in Benefiting from Role of IP in Benefiting from University-Industry Partnerships: University-Industry Partnerships:

Incubators and IP: Incubators and IP: International PerspectiveInternational Perspective

Istanbul, Turkey, January 10 and 11, 2005Istanbul, Turkey, January 10 and 11, 2005

Guriqbal Singh JaiyaGuriqbal Singh JaiyaDirector, SMEs DivisionDirector, SMEs Division

World Intellectual Property OrganizationWorld Intellectual Property Organizationwww.wipo.int/smewww.wipo.int/sme

Page 2: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Cultural Gap

• Entrepreneurial world: secrecy, profit maximization, search for competitive advantage, patents, “time is money”.

• University world: broad dissemination of knowledge and research results, independent, guided by scientific curiosity.

• Publication vs. patenting

Page 3: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

University Vs. Business:Two Worlds

Academic Community

CommercialWorld

e.g. SMEs

IP Systemas a bridge

•Decide what research•Motivated by curiosity•Attract acclaim of peers•Prompt publication

Collaboration

•Profitable products•Find new markets•Win competition•Initial secrecy

Knowledge

R&D Funding

•Decide what research•Motivated by curiosity•Attract acclaim of peers•Prompt publication

•Profitable products•Find new markets•Win competition•Initial secrecy

Page 4: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Benefits of Partnering (1)

• Limited public sector research funding:

Private sponsorship and licensing income may be the way forward

• Innovation: key for the development of industries• Gap: Innovative research results useful for

industry gathering dust on laboratory shelves• Licensing: often the only way a new invention will

ever become a product• Incentives/rewards: for researchers and faculty to

commercialize products

Page 5: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Benefits of Partnering (2)

• For SMEs:– Access to innovative technology coming out of

university and research labs to accomplish their strategic objectives in the competitive market

• For Universities and Research Laboratories– Access to private equity funding sources:

• For Venture Capitalists/Financing Institutions:– Access to early stage investment opportunities in

outstanding technologies spinning out of research institutions

Page 6: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Benefits of Partnering (3)

• Market: Helps to move inventions from laboratory to marketplace

• Efficiency: Ensures that new and better products and services reach the public more quickly and often

• Relevance: Enables researchers / inventors to participate in further development of product or process

• Time: Reduces significantly the time to eventual commercialization

• Finance: Allows SMEs to “buy” useful research results with less or without own prior research investment

Page 7: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Benefits of Partnering (4)

Partnering helps SMEs in: – starting a new business – expanding an existing business

• extend the territory• extend the nature of a business• improve the quality of goods or services• improve the market position• manufacture a new product protected by a patent,

utility model, know-how or a trade secret

Page 8: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Main Ways of Partnering• Consulting (without patentable inventions)

– Work directly with researchers– Contract directly between researcher and Business

• Sponsored Research (with possible inventions)– Contract between University and Business – Statement of work

• Licensing (of patented inventions, and of know-how)– Contract between University and business– Terms for the commercial exploitation of University /

Research Center owned technology

Page 9: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Resolving Conflicting Interests

• University: Move away from basic research?• Public interest vs. private interest?• Privatization of knowledge vs. open access?• Neglect of basic mission of the university• Differences between departments or faculties• Cheap labor for companies• University research is mainly federally funded;

results should be available to tax payers free of charge

Page 10: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Yes90.0%

No10.0%

Conflict of Interest PolicyDoes university have a written policy statement on conflict of interest for faculty member involvement with business or industry? (Percentage of universities)

Yes55.6%

No44.4%

North America Other Countries

Page 11: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Structured Structured e-mail questionnairee-mail questionnaire, administered to the TLO (technology licensing office) Director (or his/her equivalent) in the 29 member universities of APRU who have agreed to participate

Use of Use of standard definitionsstandard definitions of Association of University Technology Managers (AUTM) survey where possible

All statistical analysis presented is based on the sample returns, without weighting

Survey Methodology

Page 12: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Distribution of Responses• 22 universities

– 10 North America

– Asia/Austral-Asia: 9 Asia, 1 each Australia, New Zealand, South America

• 76% response rate (91% for North American universities and 67% for Asia/Austral-Asian universities)

• 86% public universities

• More than 70% have medical schools

• Average of 1,546 tenure track faculty members, 1,003 PhDs, 23,346 students, of which an average of 29% were graduate students

Page 13: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Distribution of Responses Frequency Percentage North America 10 45.5

University of California, Berkeley University of California, Los Angeles University of California, San Diego University of California, Santa Barbara University of Washington University of Southern California The University of British Columbia University of Oregon Stanford University University of California, Irvine

Japan 4 18.2 Kyoto University Osaka University The University of Tokyo Waseda University

Asia (excluding Japan) 5 22.7 Hong Kong University of Science and Technology National University of Singapore Seoul National University University of Science and Technology of China National Taiwan University

Australia/New Zealand 2 9.1 The University of Sydney University of Auckland

South America 1 4.5 University of Chile

Total 22 100.0

Page 14: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Commercialization: Risky, Long term, Expensive

Deriving commercially viable products from research:

• takes often very long

• there is lots of uncertainty about the outcome

(very few research projects make it to the commercial market place)

• protecting and developing a marketable product is often much more expensive than initial research

Page 15: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Difficult Phases– Financing research

– Funding for Intellectual Property protection

– Funding development work

– Managing successful commercialization

Only some inventions lead to successful product

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57 6371

2741

12

1815

33

31

3017 12

3928

1 2 2 0.12

Canada France Rep. ofKorea

Mexico Poland

Private non-profit

Higher education

Government

Business enterprise

R&D Expenditure (Percentages)

Page 17: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

National IP Policy• In the US: Bayh - Dole Act (According to the

AUTM, it has led to creation of 260,000 jobs and contributed US$ 40 billion to US economy)

• Japan

• Germany

• China

• Brazil

• in the Knowledge-driven Economy the university has new functions

Page 18: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

University IP Policy

• IP Policy for successful commercialization of research results (Win-Win for both)

• IP Policy:– ownership of IP– disclosure of IP– licensing, commercialization, and marketing – distribution of royalty income– rights and obligations of an inventor and of

the institution

Page 19: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

University IP PolicyUniversity IP Policy

• Teaching (Copyright)

• Marketing (Inventions, University)

• Research (Trade secrets and Patents)– ownership of IP– disclosure of IP– marketing, commercialization and licensing– distribution of royalty income– rights and obligations of an inventor and of the

institution

Page 20: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Invention PoliciesInvention PoliciesOwnership of patent rights to technologies developed by

faculty, students and staff (Percentage of universities)

University80.0%

University and others

10.0%

Others10.0%

University40.0%

Others20.0%

University and inventor

40.0%

North America Other Countries

Page 21: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

What are IP Management Units What are IP Management Units (IPMUs) (IPMUs) (1)(1)

Appropriate institutional structure specifically responsible for:

– managing the commercialization of IP

– facilitating the transfer of technology from universities/R&D centers to industry/business

Page 22: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

What are IPMUs What are IPMUs (2)(2)

Specific institutional arrangements vary considerably: external and/or internal

– external technology brokers or IP law firms

– office, department, unit or section (IPMU) within a faculty, university or R&D center, managed by and integrated in its overall administration (TLO,TTO, etc)

– common IPMU for a number of Universities

– IPMU may be a limited company

– technology incubators for university spin-offs/start-ups

Page 23: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

What are IPMUs What are IPMUs (3)(3)

• Called by a variety of names, such as:

– Technology Licensing Office (TLO)

– Technology Transfer Unit

– Center for Technology Management

– Innovation Centers

– Industry Liaison Office

Page 24: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Examples:IP Management Unit

• Example 1: Stanford University– Office of Technology Licensing– Started as pilot program with one staff and

three technologies– Today: 20 staff, 1100 patents currently licensed

to companies– Birth of biotechnology (Cohen Boyer patent)– Strategy of non-exclusive licensing

Page 25: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Examples:IP Management Unit

Example 2: Technion Israel Institute of Technology– Technion R&D Foundation for exploitation of

university R&D– Dimotech Ltd. (for university spin-offs)– Technion Entrepreneurial Incubator Co. Ltd.

Page 26: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Examples:IP Management Unit

Example 3: By 2000, Brazil had over 180 business incubators

– Some 84% of incubators linked to universities– Usually strong interaction between incubated

businesses and the host universities– Some 15% of firms that graduated from an

incubator have at least one patent. This figure is considerably higher than the average for Brazilian firms.

Page 27: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Examples:IP Management Unit

Example 4: Faculty of Chemistry, Universidad de la Republic of Uruguay

• Since 1998 courses on “Development of entrepreneurial capacities” and “Intellectual Property and patents” delivered within the university

• Establishment of an incubator• Establishment of a “technology pole” for the joint

development of R&D projects.

Page 28: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Importance of IPMUs Importance of IPMUs (1)(1)

(1) Effective and efficient commercialization

• structure with responsibility over technology licensing greatly facilitates the proper management of the process of

commercialization (in finding and interfacing with industrial and financial partners)

• enables inventor/ researcher to focus on the research side of the project

(and less on the related legal/business aspects for which they may not have the appropriate

expertise and/or time)

Page 29: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Importance of IPMUs Importance of IPMUs (2)(2)

(2) Awareness and training on IP matters

• Sensitizing faculty members and researchers on the importance of identifying, protecting and

commercially exploiting their inventions and/or research results

• Procedures for disclosing inventions, patenting and management of licensing

Page 30: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Importance of IPMUs Importance of IPMUs (3)(3)

Lack of expertise: Often perceived as one of the major limiting factors in managing the

commercialization of IP by universities/R&D centers

“the right mixture of scientists, lawyers and businessmen and a well-organized back-office is the

basis for success in technology transfer”

• Bernhard Hertel, Managing Director, Garching Innovation (TTO of the Max-Planck Gesellschaft)

Page 31: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Challenge of Financing an IPMU

Self-sufficiency: Long-term aim

• IPMUs should aim to become self-sufficient and eventually contribute to university funding

• In most universities, licensing pays for less than 5% of R&D costs; maximum is 20% at Stanford and Columbia Universities

Page 32: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Challenge of Financing an IPMU

“Technology transfer is a long-term process. A TT office should have the basis to survive at least ten years. It is difficult to predict when you will get your big project. But when it comes you must have the skills to manage it appropriately”

Bernhard Hertel, Garching Innovation: (Germany)

Page 33: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Other Challenges for an IPMU Elisabeth Ritter do Santos, TT Office, Federal

University of Rio Grande du Sur, Brazil:

“The main challenge is striking a balance so that the results achieved by the new functions of universities may strengthen an regenerate the university’s traditional functions.”

• Achieving institutional legitimacy• Creating IP Culture: Challenges in changing

organizational culture, which may take a lot of time• Early Success: Significant royalty income to gain

legitimacy and credibility

Page 34: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Other Challenges for an IPMU

• University research covers a huge variety of technical fields. (challenge for TT personnel)

• Academic scientists far more independent than industrial researchers. Researcher cooperation and conviction is crucial.

• Disclosure. Researchers share information widely. Avoid early disclosure.

• Difficult to establish the inventor, especially in cooperative research. Inventorship vs. authorship.

Page 35: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Role of IPMU: OverviewRole of IPMU: Overview1. General

2. Mission statement

3. University IP Policy

4. Relevant agreements

5. Invention disclosures

6. Determine patentability of inventions

7. Evaluate commercial potential

8. Obtain patent protection

9. Commercialize inventions

10. Raise awareness and train researchers/inventors on practical IP matters

Page 36: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

0.0 20.0 40.0 60.0 80.0 100.0

Incubation

Industry sponsoredresearch

Other

Trademark licensing

Spin-off companyformation

Entrepreneurship

Technology transfer

Researcher education

North America

Other

Range of Responsibilities for IPMUsPercentage of universities whose IPMUs have the

following responsibilities by region

Page 37: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

General

• Central liaison between the research center / University and industry/business (e.g. SMEs)

• Organizing corporate visits to University / research center

• Maintaining contact with companies that have potential commercial interest in new technologies

• Provide legal assistance and advice to researchers, faculty, administrators and other staff

Page 38: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

General

• Uncover commercially exploitable ideas • Manage invention disclosures• Evaluate commercial relevance and potential• Provide assessment to determine patentability• Ownership clarification (researcher team, university,

outside company, other, together etc)• Responsible for non-disclosure agreements• Responsible for option and license agreements• Responsible for obtaining and managing appropriate

IPR protection (patents, trademarks, designs...)

Page 39: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

General

• Identify and contact appropriate companies to commercialize the technology in return for royalties, license fees and/or research funding.

• Licensing IP to appropriate commercial partners

• Manage licenses for IP• Negotiate an appropriate agreement which

may, in addition to license fees and royalties, include additional research support for the inventor's laboratory

Page 40: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

General

Sensitizing researchers on the possibility of commercializing research results

– Evaluating the commercial potential of an invention

– Obtaining patent protection– Locating suitable commercial development partners– Negotiating and managing licenses

Page 41: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

General

Operational considerations– Ideally, staff should be skilled in sciences, business and

law– Part of the work is generally outsourced to specialists

(e.g. patent agents)– Disclosure (disclosure forms, early disclosure, non-

disclosure agreements, etc.)– Policy on patenting (every invention, only those with

strong market potential, etc.)– Any cooperation with industry should the subject of a

written agreement

Page 42: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Mission statementMission statement

• Include commercialization in mission statement

– In most universities: not included

– This often impedes execution of joint research projects with private sector

• Redirect skills of manpower towards production of innovations, inventions and research findings with commercial potential– Career development should not depend merely on

teaching and basic research (peer reviewed publications)

Page 43: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

University IP Policy University IP Policy

• To safeguard the interests of the university/R&D center in managing collaborative/contract/sponsored research activities

• Good IP Policy sets forth transparent guidelines and benchmarks for ownership, protection & commercialization

• At the same time, must uphold the core moral values/mission of the institution (dissemination and sharing of knowledge)

Page 44: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

University IP PolicyUniversity IP Policy

• Tailored to specific needs of the institution

• Key parts

Page 45: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

University IP PolicyUniversity IP Policy

Secrecy and Confidentiality– Identification (ongoing R&D work; laboratory

notebooks)

– Contractual obligation (NDA/CA)

– Expected protection measures (email, marking, access limitations)

– Procedures for sharing confidential information (presenting technical papers at seminars; publishing technical or journalistic articles, contracts with third parties, etc)

Some universities: reservations trade secrets openness in

knowledge-sharing

Page 46: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

University IP PolicyUniversity IP Policy

Ownership of IPRs– inventions, CR material, research findings,

discoveries, creations, new plant varieties– generated by students, guest researchers,

faculty members, inventors ‘in the course of employment’ or ‘significant use of resources’

– commissioned works– joint projects– funded by government; funded by sponsor– students– surrender of IP ownership to inventor

Page 47: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

UniversityUniversity IP PolicyIP Policy

Ownership of IP Rights– A university or R&D institute generally owns

any IP made, designed or created by a member of staff or researcher in their course of their employment.

– Sometimes written agreements (e.g. MIT)– Use of university resources– Government funded research– Sponsored research

Page 48: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

University IP PolicyUniversity IP Policy

Commercialization

– Strategy for marketing, commercializing, licensing of IP

– Distribution of income• IPMU may expect the costs incurred + some

management fees to be refunded

• Inventor may expect fair reward for his contribution

– Rights and obligations of inventor and university/R&D center

Page 49: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

University IP PolicyUniversity IP Policy

Disclosure:Need for Balance • Meeting the needs of researchers for early

publication for the sake of their career development

• Preventing “premature disclosure” of potential innovations and research findings, to avoid jeopardizing their patentability and/or commercial exploitation

Page 50: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Relevant Agreements (Examples)

• Participation Agreement• Service Agreement• Research agreements • Invention notice / disclosure• Invention ownership agreements• Confidentiality agreements• Option agreements• License or other technology transfer agreement• Agreement to settle disputes, etc.

Page 51: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Relevant AgreementsRelevant Agreements

Participation Agreement

– Confirms acceptance of the Policy by employees, students, guest researchers

– Assigning to the university/R&D center all rights in any IP of which the university/ R&D center may assert ownership

means to enforce the Policy

before any resources made available!

Page 52: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Relevant AgreementsRelevant Agreements

Service Agreement

– Between university/R&D center and company

– University/R&D center performs certain task• Evaluation, field testing, clinical trial, etc

IP issues: ownership, license, publication, commercialization (income sharing), confidentiality

Page 53: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Relevant AgreementsRelevant Agreements

Material Transfer or Bailment Agreement

– Materials from industry to university/R&D center, or reverse (often biological material)

– Use of original materials; self-replications; modifications

IP issues regarding inventions < use of materials: ownership, license,

publication, commercialization (income sharing), confidentiality

Liability: hazardous materials

Page 54: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Relevant Agreements Relevant Agreements

Confidentiality Agreement (CA/NDA)– Separate or integrated in other agreement– Employees + external partners + visitors– Bound not to release confidential information,

unless expressly permitted

protect patentability of invention

protect trade value of other technology

legal requirement for trade secret

protection

Page 55: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Invention DisclosuresInvention Disclosures

Invention Disclosure– provides information about the inventor, what was

invented, circumstances leading to the invention, facts concerning subsequent activities

– first signal that an invention has been made

– basis for determining patentability

– technical information for drafting patent application

– also to report technology that cannot be patented but is protected by other means (e.g. trade secrets or copyright)

Page 56: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Invention Disclosures Invention Disclosures

• Adopt participation agreements or P and CR agreements to govern disclosures– all researchers should be obliged to disclose all

potentially patentable inventions conceived or first put into practice in the course of their institution responsibilities

• Encourage to submit disclosures early in the invention development process– release to the public before patent application is

filed may disqualify an invention for patentability

Page 57: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Invention DisclosuresInvention Disclosures

Develop Disclosure Forms– invention title

– name of inventor

– description of invention*

– sponsorship, if any

– design date and date put into practice

– publication dates, existing or projected, if any

– most relevant technology known to the inventor

Page 58: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Invention DisclosuresInvention Disclosures

*Description of Invention

– Can be brief: explanatory drawing, data, abstracts, summaries may be sufficient

– In sufficient detail to permit a searcher or patent professional to comprehend the invention and assess its patentability

– What is the invention; what does it; why does it appear significant

Page 59: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Invention DisclosuresInvention Disclosures

Protect Disclosures as Trade Secrets

– CA/NDA with members and all outside experts : inform that the information contained in the disclosures is confidential and obligation to keep secret

Page 60: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Determine Patentability Determine Patentability of Inventionsof Inventions

• Does it provide a new technical answer to an existing or new technical problem?

• Is it possible to make practical use of it?

• Does it show an element of novelty? (some new characteristic which is not known in the body of existing knowledge in its technical field - "prior art”) patent search

• Does it show an inventive step? (could not be deduced by a person with average knowledge of the technical field)

Page 61: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Evaluate Industrial Evaluate Industrial Relevance & Commercial Potential Relevance & Commercial Potential

• Does the technology offer a cheaper and/or better way of accomplishing something?

• Are there competing technologies available and if so how much better is the invention?

• Does it have potential for creating a new market?

• How much investment, in both time and money, will be required to bring the invention to the market?

Page 62: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Evaluate Industrial Evaluate Industrial Relevance & Commercial PotentialRelevance & Commercial Potential

• if it is decided not to patent/license by the University, then:

reassign ownership to inventor

retain rights to use the invention for further research and for educational purposes

Page 63: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Raising Funds for Spin-offs/Start-up

Two ways of raising funds

– Debt - loan which the borrower must repay

– Equity - which gives the investor a share of the actual business of the investee and is not automatically repaid by the investee business, but rather relies on the investor ultimately realizing the equity held in the business

Page 64: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Debt Finance

• Debt finance is generally ‘secured’ by a charge over the business’ assets. In principle, these assets can be any claims that have reasonably predictable cash flows, or even future receivables that are exclusive.

• Securitization of IP assets - a new trend: collateralizing commercial loans and bank financing by granting a security interest in IP is a growing practice, esp. in music, Internet and high technology sectors.

Page 65: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Venture capital

• For the venture capitalist, return depends upon future profits.

• IP ownership is important to convince investors of the market opportunities open to the enterprise for the commercialization of the products/services in question :– Patents provide exclusivity for the commercialization

of inventions and may be important to convince investors for the commercialization of your product

– A patent is also a proof that the product is innovative.

Page 66: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Yes90.0%

No10.0%

Equity Management PolicyDoes university have a an equity management policy for start-up

companies receiving technology licensing?(Percentage of universities)

Yes22.2%

No77.8%

North America Other countries

Page 67: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Evaluate industrial Evaluate industrial relevance & commercial potentialrelevance & commercial potential

• Will the inventors continue to work on the invention?

• What will be the potential pay-off for a company that makes an investment in the development of the invention?

• Locate suitable commercial development partners & potential licensees

• Estimate costs of patent protection

Page 68: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Academic Entrepreneur• Business Plan: takes stock of the current situation

and provides roadmap for the future. • For spin-offs/start-ups, it is crucial for obtaining

funds or gaining any credibility with investors, partners, etc.– Experience of manager

– Description of product/service

– Financial resources (or expected funding)

– Market research (is there a market for it)

– Competitors (why is it special/different) and barriers to entry (e.g. IP of others)

– Marketing strategy,

– Price of product, costs, projections of cash flow

Page 69: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Academic Entrepreneurship

• University spin-offs/start-ups– Depends on willingness of researcher– Requires entrepreneurial thinking– Association with business-minded people

recommended– Realistic valuation of the market potential

of the product

Page 70: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Academic Entrepreneur

• Incubators often provide the ideal setting for university spin-offs/start-ups.– Controlled environments where failure rate in first

years of operations is diminished– Physical space, infrastructure and access to university

facilities– Access to training – Access to direct assistance on business planning,

licensing negotiations, accounting and legal expertise (free of charge, subsidized or at market rate)

Page 71: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

50.0 50.0

60.055.0

80.0

60.0

0.0

35.0

20.0

30.0

40.0 40.0

50.0

5.05.010.010.0

0.00.0

20.0

40.0

60.0

80.0

NorthAmerica

Other Total NorthAmerica

Other Total

Yes Yes, but need approval No

Start-Up Company PoliciesStart-Up Company PoliciesCan a tenure-track faculty member serve on board of directors of:

Per

cen

tag

e o

f u

niv

ersi

ties

Existing companiesStart-up company to

commercialize invention

Page 72: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

0.0

20.0

40.0

60.0

80.0

NorthAmerica

Other Total NorthAmerica

Other Total

Yes Yes, but need approval No

Start-Up Company PoliciesStart-Up Company Policies

Can a tenure-track faculty member:

Per

cen

tag

e o

f u

niv

ersi

ties

Take no-pay leave for involvement in start-up co. to commercialize invention

Engage in consulting for industry

Page 73: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

0.0 20.0 40.0 60.0 80.0 100.0

Direct investmt fr uni endowmt fund in start-up cos.

Others

Uni-based incubator facility/services

Uni-affiliated research/science park

Prototyping fund

Aid in recruiting mgmt team

Business plan comp

Advice on govt commercialization grants

Entrep center providing entrep-related educ and outreach events

Facilitate access to VC

Mentoring and business advisory svcs

Uni can take equity in start-up cos.

North America

Other

Assistance Provided to Start-Up Companies (Percentage of universities providing assistance)

Page 74: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Tracking of Start-up CompaniesDoes university track number of start-up companies by

faculty members/alumni? (Percentage of universities responding ‘yes’)

50.0

66.7

57.9

10.0 11.1 10.5

0.0

20.0

40.0

60.0

80.0

North America Other Total

Start-ups by faculty Start-ups by alumni

Page 75: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

64.2

9.2

34.2

4.0 4.4 4.3

0.0

20.0

40.0

60.0

80.0

NorthAmerica

Other Total NorthAmerica

Other Total

Tracking of Start-Up Companies Tracking of Start-Up Companies by Faculty Membersby Faculty Members

Mean cumulative no. of start-up companies as of end FY2000(for universities that track start-ups by faculty members only)

With technology licensing Without technology licensing

Page 76: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Obtain Appropriate Obtain Appropriate IP ProtectionIP Protection

• Applications for P, UM, TM, ID, PV

• Patents: Scope of patent; where (countries)

• Funds

• Locate partners for commercialization of IP in domestic and international markets

Page 77: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Marketing

• Crucial issue often neglected by IPMUs

• Inventions transferred from laboratory shelves to IPMU shelves

• Need for appropriate marketing skills

• Websites and other advertisements?

• Most successful TT generally takes place between cooperating partners, or through the researcher’s own contacts in industry.

Page 78: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Market EvaluationSome Important Questions

– Does the technology offer a cheaper and/or better way of accomplishing something?

– Are there competing technologies and if so how much better is the invention?

– How much investment in time and money will be required to bring the invention to the marketplace?

– Does it have the potential for creating the new market?

– What are the potential pay-offs for investing in its development

Page 79: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

CommercializeCommercialize

• Inventions, innovations, research findings, trademarks, trade secrets

• License agreements

• Sale/Assignment

• Retain rights

• Revenue distribution

• Monitoring

Page 80: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Licensing

• Licensing of the invention to one or more existing companies for the purposes of commercialization

• Exclusive or non-exclusive licensing• Developed product: low risk, market is known,

focus on manufacturing and marketing• Research result: high risk, far from market, focus

on product definition, patent position uncertain, licenses fees low.

Page 81: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

UniversityUniversity IP PolicyIP Policy

• Distribution of Royalty Income– Royalty income generally shared between

institution / department / researcher– Most universities have a sliding scale. The

higher the royalty income the lower the percentage received by the researcher

– In the USA, researchers often choose to allocate income to buy equipment and university provides matching/equal funds

Page 82: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

0.0 5.0 10.0 15.0 20.0

Other

No. of inventions disclosed

No. of start-ups created

Prestige of the university

Generation of sponsored research grants

Local economic development

Licensing income generated

No. of inventions commercialized

Transfer of technologies for the public good

Service to researchers

North America

Other

Importance of Technology Transfer Objectives

(Mean score)

Page 83: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Raise Awareness and TrainingRaise Awareness and Training

• IP Policy, IP laws, Procedures, Forms

• Create awareness of importance of IP

• Promote greater use of patent information

• Avoid infringement of IPRs of others

• Key issues to be kept in mind while negotiating/discussing collaborative project with a company or sponsor

Page 84: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Tracking of Economic Impact/Wealth Creation Indicators of Start-Up Companies with Technology Licensing from University

(Percentage of universities which track indicator)

0.0 20.0 40.0 60.0 80.0

Other indicators

Externalinvestmentreceived

Sales revenuegenerated

No. of jobs created

North AmericaOtherTotal

Page 85: Role of IP in Benefiting from University-Industry Partnerships: Incubators and IP: International Perspective Istanbul, Turkey, January 10 and 11, 2005.

Tracking of Economic Impact/Wealth Creation Indicators of Start-Up Companies without

Technology Licensing from University(Percentage of universities which track indicator)

0.0 20.0 40.0

Other indicators

Externalinvestmentreceived

Sales revenuegenerated

No. of jobs created

North AmericaOtherTotal